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Trade mark wars: Colin v Cuthbert

Over the past week the news of Marks & Spencer suing Aldi for infringing its trade marked “Colin the Caterpillar” cake has dominated the headlines.

M&S launched its beloved caterpillar-shaped chocolate cake back in the 90’s and has multiple registered trade marks over “Colin the Caterpillar”, giving it the exclusive right to use of “Colin the Caterpillar” and preventing others from using its trade marks without the supermarket’s consent.

M&S has issued a claim in the High Court against Aldi for infringement of its trade marks on the basis that Aldi’s similar caterpillar inspired cake, “Cuthbert the Caterpillar”, is so similar that it “rides on the coat-tails” of the success and reputation of “Colin”.  M&S is seeking an Order from the Court that “Cuthbert” be removed from Aldi’s stocks and Aldi be prohibited from selling future goods which are similar or identical to “Colin”.

In order to establish that its trade mark has been infringed by Aldi, M&S will need to persuade the Court that “Cuthbert” is similar to its registered trade mark and that Aldi is seeking to take unfair advantage of M&S’ trade mark which has built up a reputation since it was created.

One difficulty for M&S is that Aldi is not the only supermarket to jump onto the success of the cake, as all the other major supermarkets have created their own version of “Colin”. There is “Clyde the Caterpillar” by Asda, “Curly the Caterpillar” by Tesco, “Wiggles the Caterpillar” by Sainsbury’s and “Morris the Caterpillar” by Morrisons. This factor is likely to weaken M&S’ case, as the Court will probably consider that the presence of multiple caterpillar-shaped cakes in the market means that consumers are accustomed to seeing numerous caterpillar inspired cakes from different retailers and as such do not associate such cakes solely with “Colin”.

In a twist to this saga, Aldi has just announced that it will be launching a “Special Edition Cuthbert” with the profits to be donated to cancer charities including M&S’ partner charity, Macmillan Cancer Support. Aldi has suggested that “Colin and Cuthbert be besties” and that the two supermarkets should “raise money for charity, not lawyers”. M&S has responded by telling Aldi that a cake based on Aldi’s “Kevin the Carrot” commercials would be better and said: “That idea’s on us”.  The duelling supermarkets appear to be locked in two separate battles, one in a court of law and the other in the court of public opinion. What is certain is both battles will be interesting and entertaining to follow as the lawyers and publicists play out their strategies.

What lessons can be learned from these wrangles? In order to avoid others gaining from your “unique” goods it may be worthwhile applying for an early registered trade mark. If you are granted the trade mark, then you will be afforded statutory protection against those who seek to use an identical or similar marks to your trade mark. Whilst it does not prevent your trade mark being breached, it does at least give you some protection as in the registration process any objectors could come forward and dispute the application for registration of the trade mark.

However, history has shown that it can sometimes be difficult to register certain trade marks.  Back in 2018, after a decade long spat with Cadbury, Nestlé’s attempts to trade mark the four-fingered wafer shape (it’s Kit Kat chocolate bar) was ultimately rejected by the European Court of Justice – details of that case can be found in our previous article “The Shape of Things To Come?”.

If you require assistance with the registration of intellectual property rights and the protection of those rights should any disputes arise, Blacks Solicitors can assist. Please email  or call our Dispute Resolution team on 0113 227 9316 today.

 

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Yat Wong

Solicitor
Commercial Dispute Resolution
YWong@LawBlacks.com
0113 227 9346
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Yat Wong Blacks Solicitors LLP